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UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`AMERICAN HONDA MOTOR CO., INC.,
`HONDA OF AMERICA MFG., INC.,
`HONDA PATENTS & TECHNOLOGIES NORTH AMERICA, LLC,
`and HONDA MOTOR CO., LTD.,
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`Case IPR2015-01004
`Patent 6,012,007
`____________
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`37 C.F.R. § 42.8(a)(2)
`
`
`
`1  
`
`
`
`  
`
`

`
`Pursuant to 37 C.F.R. § 42.8(a)(2) Patent Owner updates its mandatory
`
`notices as follows:
`
`
`
`(2) Related matters.
`
`U.S. Patent No. 6,012,007 is at issue in the following pending litigation:
`
`•   Signal IP, Inc. v. Ford Motor Company, 2-14-cv-13729 (MIED);
`•   Signal IP, Inc. v. Mercedes-Benz USA, LLC et al., 2-14-cv-03109
`(CACD);
`•   Signal IP, Inc. v. Fiat USA, Inc. et al., 2-14-cv-13864 (MIED);
`•   Signal IP, Inc. v. BMW of North America, LLC et al., 2-14-cv-03111
`(CACD);
`•   Signal IP, Inc. v. Volkswagen Group of America, Inc. d/b/a Audi of
`America, Inc. et al., 2-14-cv-03113 (CACD);
`•   Signal IP, Inc. v. Porsche Cars North America, Inc., 2-14-cv-03114
`(CACD);
`•   Signal IP, Inc. v. Jaguar Land Rover North America, LLC., 2-14-cv-
`03108 (CACD);
`•   Signal IP, Inc. v. Volvo Cars of North America, LLC, 2-14-cv-03107
`(CACD);
`•   Signal IP, Inc. v. Subaru of America, Inc., 2-14-cv-02963 (CACD);
`•   Signal IP, Inc. v. Nissan North America, Inc., 2-14-cv-02962
`(CACD);
`•   Signal IP, Inc. v. Kia Motors America, Inc., 2-14-cv-02457 (CACD);
`•   Signal IP, Inc. v. American Honda Motor Co., Inc. et al., 2-14-cv-
`02454 (CACD);
`
`2  
`
`  
`
`

`
`•   Signal IP, Inc. v. Mitsubishi Motors North America, Inc., Case No. 8-
`14-cv-00497 (CACD); and
`•   Signal IP, Inc. v. Mazda Motor of America, Inc., Case No 8-14-cv-
`00491 (CACD).
`
`
`
`On April 17, 2015, the U.S. District Court for the Central District of
`
`California entered an Order re Claims Construction regarding U.S. Patents
`
`5,714,927; 5,732,375; 6,012,007; 6,434,486; 6,775,601; 5,463,374; and
`
`5,954,775, at issue in the above-noted litigations. A copy of the Court’s
`
`Order re Claim Construction is provided as Ex. 2001.
`
`On May 20, 2015, various parties to the above-noted litigations
`
`entered into a stipulation for entry of a partial final judgment. Pursuant to the
`
`stipulation, Ex. 2002,
`
`In light of the Court’s claim construction order, Plaintiff
`
`and Defendants stipulate to entry of a partial final
`
`judgment that the following claims are invalid due to
`
`indefiniteness under 35 U.S.C. § 112, paragraph 2: (i)
`
`claims 8, 9, 10, 11, 13, 15, and 17 of the ‘601 patent; (ii)
`
`claims 1 and 7 of the ’375 patent; and (iii) claims 1, 8, 9,
`
`  
`
`17, 18, 19, and 20 of the ’007 patent.
`
`3  
`
`

`
`Plaintiff and Defendants reserve all appellate rights,
`
`including, but not limited to, the right to appeal the
`
`Court’s April 17, 2015 claim construction order to the
`
`United States Court of Appeals for the Federal Circuit.
`
`Plaintiff reserves all rights as to claims not addressed by
`
`the Court’s claim construction order, or any new claims
`
`that may be issued by the United States Patent Office.
`
`
`
`On May 22, 2015, pursuant to the above-referenced stipulation, the
`
`U.S. District Court for the Central District of California entered a Partial
`
`Judgment of Invalidity, Ex. 3001, that:
`
`1.   Claims 8, 9, 10, 11, 13, 15, and 17 of U.S. Patent No.
`
`6,775,601 (“the ’601 patent”) are invalid as indefinite
`
`under 35 U.S.C. § 112, paragraph 2.
`
`2.   Claims 1 and 7 of U.S. Patent No. 5,732,375 (“the
`
`’375 patent”) are invalid as indefinite under 35 U.S.C.
`
`§ 112, paragraph 2.
`
`3.   Claims 1, 8, 9, 17, 18, 19, and 20 of U.S. Patent No.
`
`6,012,007 (“the ’007 patent”) are invalid as indefinite
`
`  
`
`under 35 U.S.C. § 112, paragraph 2.
`
`4  
`
`

`
`
`
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`
`
`
`
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`
`
`Respectfully submitted,
`
`
`
`
`Dated: September 3, 2015
`
`
`
`
`
`
`
`
`
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
`
`
`
`
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
`
`
`
`
`
`  
`
`5  
`
`

`
`EXHIBIT LIST
`
`Description
`
`UNITED STATES DISTRICT COURT CENTRAL
`DISTRICT OF CALIFORNIA, ORDER RE CLAIM
`CONSTRUCTION, Case Nos. 2:14-cv-02454-JAK et al.,
`April 17, 2015.
`
`JOINT STIPULATION FOR ENTRY OF PARTIAL
`FINAL JUDGMENT OF INVALIDITY, Case Nos. 2:14-
`cv-02454-JAK et al., May 20, 2015.
`
`
`
`6  
`
`
`Exhibit No.
`
`2001
`
`
`2002
`
`
`
`  
`
`

`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`was served on September 3, 2015, by filing this document though the Patent
`Review Processing System as well as by delivering a copy via email directed
`to the attorneys of record for the Petitioner at the following address:
`Joshua A. Griswold
`Daniel Smith
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street,
`Minneapolis, MN 55402
`
`griswold@fr.com
`IPR15625-0018IP1@fr.com
`
`
`
`
`The parties have agreed to electronic service in this proceeding.
`
`
`
`
`
`
`Respectfully submitted,
`/Tarek N. Fahmi/
`Dated: September 3, 2015
`
`
`
`
`
`
`
`
`Tarek N. Fahmi
`
`
`
`
`
`
`Reg. No. 41,402
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: patents@ascendalaw.com
`
`
`
`  
`
`7  

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